Ex Parte Sargent et al

Patent Trial and Appeal Board

Nov 15, 2013

90011628 (P.T.A.B. Nov. 15, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/011,628 05/09/2011 R. Richard Sargent P2160-804896 3103
23370 7590 11/18/2013
KILPATRICK TOWNSEND & STOCKTON LLP
1100 PEACHTREE STREET
SUITE 2800
ATLANTA, GA 30309
EXAMINER
HUANG, EVELYN MEI
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
11/18/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

PEACH STATE LABS, INC.
Patent Owner and Appellant
____________

Appeal 2013-008300
Reexamination Control 90/011,628
Patent U.S. 5,672,279
Technology Center 3900
____________

Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and
RAE LYNN P. GUEST, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
Patent Owner, Peach State Labs, Inc., appeals from the Patent
Examiner‟s rejections of claims 1-5 in the above-identified ex parte
reexamination proceeding of US 5,672,279. The Board‟s jurisdiction for
this appeal is under 35 U.S.C. §§ 6(b), 134(b), and 306. We affirm.

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I. STATEMENT OF CASE
This appeal involves US 5,672,279 (“the „279 Patent”) which issued
September 30, 1997. Under 35 U.S.C. § 301-307 and 37 C.F.R. § 1.510, a
Corrected Request for Ex Parte Reexamination of the „279 Patent was
submitted by third-party requester, Environmental Manufacturing Solutions,
LLC (“EMS”) on May 9, 2011. Reexamination of the „279 Patent was
subsequently ordered (Order Granting Request for Reexamination, June 29,
2011). An oral hearing was held September 18, 2013. A transcript will be
entered into the record in due course.
The real party in interest in this ex parte reexamination proceeding is
the Patent Owner, Peach State Labs, Inc. (Appeal Br. 1, dated December 26,
2012). Patent Owner states that the „279 Patent was the subject of Peach
State Labs, Inc. v. Environmental Manufacturing Solutions, LLC, Case
No.4:08-CV-190-HLM, previously pending in the U.S. District Court for the
Northern District of Georgia, Rome Division and that the case was
dismissed without prejudice on July 6, 2009 (id.) Patent Owner also states
that the „279 Patent is the subject of Peach State Labs, Inc. v. Environmental
Manufacturing Solutions, LLC, Case No. 6:09-CV-395-ORL-28-DAB,
currently pending in the U.S. District Court for the Middle District of
Florida, Orlando Division, which is currently stayed and the outcome will be
directly affected the Board's decision in this Appeal (id.)
The claimed subject matter pertains to a method to solubilize calcium
carbonate in aqueous suspensions or dispersions of calcium carbonate that
includes adding, to the suspensions or dispersions, a sufficient amount of
urea hydrochloride to convert the calcium carbonate to a water soluble salt.
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According to the „279 Patent, calcium carbonate is used in various
industrial processes and products, such as in recycling, paper production,
and cement („279 Patent, col. 1, ll. 15-23). Calcium carbonate is also a
major cause of boiler scale when hard water is used in heating systems (id. at
col. 1, ll. 40-41). The „279 Patent discloses that hydrochloric acid has been
used in the prior art to treat and remove calcium carbonate deposits that
occur when used in these processes, but the acid can corrode equipment and
is noxious to humans (id. at col. 1, ll. 34-39). The „279 Patent teaches that it
“has been discovered that urea hydrochloride is an inexpensive and useful
agent for the removal of the build-up of water-insoluble metal salts on
surfaces, and the dissolution of water-insoluble metal salt dispersions or
suspensions.” (Id. at col. 2, ll. 3-6). Urea hydrochloride is characterized as
“useful in the removal or dissolution of calcium carbonate.” (Id. at col. 2, ll.
9-11.)
The use of urea hydrochloride to remove the build-up of water-
insoluble metal salts on surfaces, and to dissolve water-
insoluble metal salt dispersions or suspensions, has advantages
over conventional methods using hydrochloric acid or other
agents. For example, urea hydrochloride is less corrosive to
metal equipment and other contact surfaces than the equivalent
amount of hydrochloric acid, and has a significantly less
tendency to release hydrogen chloride gas.
(Id. at col. 2, ll. 21-28.)
Claims 1-5 are pending and stand rejected by the Examiner under 35
U.S.C. § 103 as obvious in view of Dill (US 4,466,893, issued Aug. 21,
1984) and admitted prior art.

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Claim 1 is the only independent claim as reads as follows:
1. A method to solubilize calcium carbonate in aqueous
suspensions or dispersions of calcium carbonate that includes adding
to the suspensions or dispersions a sufficient amount of urea
hydrochloride to convert the calcium carbonate to a water soluble salt,
wherein a molar ratio of urea to hydrochloric acid approximately
between 1:4 and 4:1 is used to form said urea hydrochloride.

CLAIM INTERPRETATION
Claim 1 is directed to a “method to solubilize calcium carbonate in
aqueous suspensions or dispersions of calcium carbonate that includes
adding to the suspensions or dispersions a sufficient amount of urea
hydrochloride to convert the calcium carbonate to a water soluble salt.”
The issue in this appeal is whether solubilizing “calcium carbonate
in . . . dispersions of calcium carbonate” includes removing calcium
carbonate residue from surfaces. During reexamination, the PTO must give
the terms in a claim their broadest reasonable construction consistent with
the specification as they would be understood by one of ordinary skill in the
art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004);
In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010); In re
Abbott Diabetes Care Inc., 696 F.3d 1142 (Fed. Cir. 2012). There are two
distinct inquiries: what the term “dispersion” means to one of ordinary skill
in the art; and whether the term “dispersion” has a special meaning in the
patent specification that deviates from what the term means to one of
ordinary skill in the art?
We first turn to the „279 Patent specification. The „279 Patent draws a
distinction between removing calcium carbonate deposits from surfaces and
removing calcium carbonate dispersions from water and liquid effluents.
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For example, the „279 Patent states that a “disadvantage of using calcium
carbonate” is that “it is only very slightly soluble in water, and thus tends to
build up as a deposit on surfaces, or form a dispersion in water-based
liquids” („279 Patent, col. 1, ll. 24-27). The „279 Patent refers to removing
the dispersions from effluents:
This effluent cannot be disposed of in publicly owned treatment
facilities because of its solids content and pH. In a typical
process, hydrochloric acid is added to the water to dissolve the
calcium carbonate, removing the dispersion.
(„279 Patent, col. 1, ll. 32-36.)
The „279 Patent describes its invention as the use of urea
hydrochloride “for the removal of the build-up of water-insoluble metal salts
on surfaces, and the dissolution of water-insoluble metal salt dispersions or
suspensions.” („279 Patent, col. 2, ll. 3-6.)
The term “dispersion” is therefore used in the specification to refer to
calcium carbonate dispersed in liquid. In view of this disclosure, one of
ordinary skill in the art would have reasonably construed the phrase
“solubilize calcium carbonate in aqueous suspensions or dispersions of
calcium carbonate” to mean removing the calcium carbonate that is
dispersed or suspended within a liquid effluent. The Examiner concluded
that the explicit language of the claim also leads to this interpretation,
finding that “aqueous” in the phrase “aqueous suspensions or dispersions”
modifies the term “dispersions,” as well as the term “suspensions” (Answer
4).
As noted by the Examiner, the prosecution history also supports this
interpretation. During prosecution, the claims were amended on October 16,
1995 (underlining and brackets part of the original):
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1. (Amended) A method to [remove undesirable solids
comprising water-insoluble metal salt] solubilize calcium
carbonate in aqueous suspensions or dispersions of calcium
carbonate that includes [treating the solids with] adding to the
suspensions or dispersions a sufficient amount of urea
hydrochloride to convert the [water insoluble salt] calcium
carbonate to a water soluble salt.

14. (Amended) A method to [remove undesirable solids
comprising water-insoluble metal salt] solubilize calcium
carbonate in aqueous suspensions or dispersions of calcium
carbonate that includes [treating the solids with] adding to the
suspensions or dispersions a strong acid/weak base salt that
includes at least one equivalent unit of weak base for every
equivalent unit of strong acid, wherein the strong acid/weak
base salt is used in a sufficient amount to convert the [water
insoluble salt] calcium carbonate to a water soluble salt.
In arguing a prior art rejection over claim 14 during the original
prosecution of the „279 Patent, Patent Owner stated:
The invention as now claimed provides a method to lower the
solids content of industrial liquids that contain calcium
carbonate, and to treat the effluent from paper manufacturing
and recycling processes. These problems, or the solutions for
these problems, are not addressed or even suggested by Young
[cited prior art rejection]. Accordingly, the rejection under
Section 102(b) should be withdrawn.
(Response dated October 16, 1995, p. 8; emphasis added.)
Claim 1 was amended in the same way as claim 14. In both cases, the
claims were narrowed to recite a method to “solubilize calcium carbonate in
aqueous suspensions or dispersions of calcium carbonate,” as in claim 1
currently at issue in this appeal. Patent Owner‟s own characterization of the
claimed invention is that the urea hydrochloride is used to lower the solid
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content of liquids and to treat effluents. This statement is consistent with the
claim language and specification disclosure discussed above that
“dispersions of calcium carbonate” is a reference to calcium carbonate in a
liquid, as distinguished from calcium carbonate being present on a surface as
a deposit.
Patent Owner contends that this interpretation is too narrow, and that
dispersion should include “solid dispersions (deposits)” on a surface (Appeal
Br. 17). To support the argument that a dispersion can be a “solid
dispersion” on a surface, Patent Owner provided declarations by Laren M.
Tolbert, Ph.D. (First Tolbert Declaration, dated February 1, 2012; Exhibit
2A attached to Appeal Br.; “First Tolbert Decl.”) (Second Tolbert
Declaration, dated May 21, 2012; Exhibit 4A attached to Appeal Br.;
“Second Tolbert Decl.”) Dr. Tolbert has a Ph.D. in organic chemistry, with
“extensive knowledge of acid-base chemistry,” and is a Professor in the
School Of Chemistry at Georgia Institute of Technology (First Tolbert Decl.
¶¶ 2, 3, & 4). Dr. Tolbert was also employed by Shell Oil Company as a
geophysicist (Second Tolbert Decl. ¶ 3). In view of his academic credentials
and experience, we find that Dr. Tolbert is qualified to testify as to the
matters in his declaration.
Dr. Tolbert testified that “dispersions are generally associated with a
material of one composition dispersed in another material, the bulk
substance, which may be a solid, liquid, or gas.” (Second Tolbert Decl. ¶ 6).
Dr. Tolbert further testified:
[D]ispersions can be solid within solids as well. When a
suspension settles, the particles begin to agglomerate but
maintain some similarity to their suspended state. For instance,
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they can be surrounded by molecules of water, even though
they are no longer suspended in water. Even as the deposited
particles dry, if they are finely divided particles dispersed
throughout a bulk substance or if they surround other finely
divided particles the system is a solid-in-solid dispersion.
(Second Tolbert Decl. ¶ 7.)
While Dr. Tolbert articulated a definition of a “dispersion” that
included “solids within solids,” he did not provide testimony or evidence
that a calcium carbonate deposit on a surface would be considered a
dispersion of calcium carbonate as that term is used in the „279 Patent.
Patent Owner made that same argument to the Examiner. On pages
13-14 of the Response to an Office Action, filed on February 1, 2012
(Exhibit 2 attached to Appeal Br.), Patent Owner provides evidence that the
„279 Patent describes build-up of calcium carbonate and water-insoluble
metal salts on surfaces, but Patent Owner did not establish that such build-up
would be considered a solid-in-solid dispersion. For example, Patent Owner
describes the patent as covering “solid particles of calcium carbonate settled
onto a surface with other solid particles (a solid in solid dispersion where the
calcium carbonate is either the bulk or dispersed phase)” (Exhibit 2, p. 14),
but Patent Owner did not point to supporting disclosure in the „279 Patent
where this “solid-in-solid dispersion” is described or extrinsic evidence that
the build-ups described in the „279 Patent are solid-in-solid dispersions.
Moreover, as discussed above, Dr. Tolbert in his second Declaration did not
establish a connection between the definition of a solid dispersion and the
so-called build-up of calcium carbonate on surfaces as described in the „279
Patent specification.
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Alternatively, Patent Owner contends that abrading calcium carbonate
from a surface would create an aqueous suspension of calcium carbonate,
and that the urea hydrochloride present during the abrading process would
convert the calcium carbonate in the suspension to a water soluble salt as
recited in claim 1 (Appeal Br. 20-21). Thus, Patent Owner‟s second theory
is that the claim covers abrading calcium carbonate from surfaces because,
during the abrading process, an aqueous suspension of calcium carbonate
would be produced. In response to the Examiner‟s finding that the concept
is not disclosed in the patent, Patent Owner states “the concept is inherent in
the reaction, would have been understood by a person skilled in the art given
the other teachings in the '279 patent, and need not be spelled out in the
patent.” (Id. at 21.)
Patent Owner provided adequate evidence that applying a solution of
urea hydrochloride to a solid deposit of calcium carbonate would result in a
suspension of calcium carbonate. Such evidence comprises testimony by
Dr. Tolbert (Second Tolbert Decl. ¶ 10) and district court testimony by Dr.
Kimberly Kurtis (Appeal Br. 18-20).
However, the Examiner found that “the claimed method requires the
act of adding urea-HCl to an aqueous suspension or dispersion of calcium
carbonate that is already there, and is thus distinct from forming a
suspension or dispersions of small pieces of calcium carbonate-containing
concrete or scales in the urea-HCl solution.” (Answer 10.) Patent Owner
contends that the Examiner‟s interpretation ignores the “scientific reality of
the claimed reaction.” (Appeal Br. 22.) Patent Owner argues that urea
hydrochloride is continuously “added” to the reaction as urea hydrochloride
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molecules in the solution continuously contacts calcium carbonate
molecules. (Id.) That is, as one molecule of calcium carbonate is converted
to the soluble salt, a “new” calcium carbonate molecule is exposed and a
molecule of urea hydrochloride is “added” to it. (Id.)
There are two disputed definitions of the term “adding” recited in
claim 1. First is the Examiner‟s definition that “adding” refers to the bulk
addition of urea hydrochloride to a calcium carbonate suspension or
dispersion. Second is Patent Owner‟s definition that “added” refers to the
microscopic chemical reaction that is taking place in the suspension.
To support their definition, Patent Owner points to paragraphs 10 of
Dr. Tolbert‟s First and Second Declarations (Appeal Br. 22). We have
considered this written testimony but do not find it persuasive since it does
not address the meaning of the term “adding” as it would be understood by
one of ordinary skill in the art. Rather, Dr. Tolbert is simply describing the
dissolution process, but does not give his opinion on the meaning of the term
“adding” as recited in claim 1.
The „279 Patent does not provide a special definition for the term
“adding.” However, the patent uses it in the same way that the Examiner
does, i.e., to mean adding bulk urea hydrochloride to a solution. For
example, the patent describes “a typical process” in which “hydrochloric
acid is added to the water to dissolve the calcium carbonate, removing the
dispersion.” („279 Patent, col. 1, ll. 34-36.) Since Patent Owner provided
insufficient evidence to support their interpretation, we will not interpret
“adding” to include the microscopic chemical reaction that occurs in
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solution, but rather shall construe the term “adding” to mean the bulk
addition of urea hydrochloride to a suspension or dispersion.

REJECTION
Based on disclosure in the „279 Patent (e.g., col. 1, ll. 29-36), the
Examiner found it was well known to use hydrochloric acid (“HCl”) to
dissolve calcium carbonate in aqueous suspensions or dispersions (Answer
9). The Examiner further found it was general knowledge “that calcium
carbonate dissolves in acid, such as HCl, with evolution of carbon dioxide.
Calcium carbonate (limestone), which is water-insoluble, reacts with HCl to
form calcium chloride, which is water-soluble (Condensed Chemical
Dictionary, 7
th
Edition, 1966, pages 162 and 163).” (Id.) The Examiner
cited Dill for its teaching of using urea hydrochloride, rather than HCl alone,
to dissolve limestone which is made of calcium carbonate (id.). The
Examiner found that one of ordinary skill in the art would have had reason
to use urea hydrochloride, instead of HCl alone, to dissolve calcium
carbonate in suspensions and dispersions for the advantages described in
Dill (id). The Examiner further found that urea hydrochloride, when
contacted with calcium carbonate, “would predictably produce calcium
chloride, which is a water-soluble salt” (id).

A. Dill as non-analogous art
In making an obviousness determination, the first step is to ascertain
the prior art. Graham v. John Deere Co., 383 U.S. 1, 17 (Fed. Cir. 1966).
Prior art which is pertinent to the claimed invention is referred to as
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“analogous” prior art. It is well-established that there are two criteria to be
applied when determining whether a prior art reference is analogous: (1)
whether the reference is from the same field of endeavor as the claimed
invention, and (2) if the reference is not within the same field of endeavor,
whether the reference “is reasonably pertinent to the particular problem with
which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir.
2004); In re Clay, 966 F.2d at 659,660 (Fed. Cir. 1992).
Patent Owner contends that Dill is non-analogous art.
First, Patent Owner argues that Dill and the invention of the „279
Patent are not in the same “field of endeavor.” Patent Owner contends that
the field of endeavor of the „279 Patent “is cleaning calcium carbonate
suspensions and dispersions from water-based liquids and surfaces
contacting the water based liquids, i.e., removing calcium carbonate
suspended or dispersed in or from a water-based liquid while protecting the
surroundings.” (Appeal Br. 7.) Furthermore, Patent Owner contends, the
inventors solved the problems “listed in the specification of effluent that
could not be disposed of, corrosion to equipment, and hazards to human
health,” making the process safe (id. at 8). In contrast, Patent Owner
contends that Dill is related to subterranean drilling whose purpose is to
damage the surroundings by creating fractures, etchings, and openings
through which oil and natural gas can flow (id.) “Harsh conditions are used
due to the harsh environment and the lack of concern for protecting the
surroundings.” (Id.) Thus, Patent Owner argues that “the field of Dill is
extraction of oil and natural gas from a subterranean formation,” while the
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field of the „279 Patent is “cleaning calcium carbonate from water based
liquids and surfaces contacting those liquids.” (Id. at 10.)
Second, Patent Owner contends that a person of ordinary skill in the
art of the „279 Patent would not have considered Dill pertinent to the subject
matter of the „279 Patent or the problem the inventors were trying to solve
(Appeal Br. 4). According to Patent Owner, the Dill is concerned with
“extending reaction time, improving stability of thickening or viscosifying
agents (i.e., the gel), and reducing corrosive fumes emanating from a well
bore.” (Id. at 11.) The urea in Dill, Patent Owner contends, is used to
extend the viscous stability of a gelled acid composition (id. at 11-12).
Patent Owner argues that none of these concerns would have been pertinent
to the „279 Patent whose problem “is preventing adverse effects on man-
made systems caused by suspensions and dispersions of calcium carbonate
and doing so in a way that does not itself damage the systems.” (Id.)
A preponderance of the evidence supports a finding that one of
ordinary skill in the art would have found Dill reasonably pertinent to the
problem faced by the inventors. According to Patent Owner, one of the
problems when using hydrochloric acid to remove or dissolve calcium
carbonate is that the acid causes “corrosion to equipment, and hazards to
human health” (Appeal Br. 7). Consistently, the „279 Patent discloses that
“hydrochloric acid is a gas that can corrode equipment and is noxious to
humans.” „279 Patent, col. 1, ll. 37-39. The patent states that the use of urea
hydrochloride solved this problem:
For example, urea hydrochloride is less corrosive to metal
equipment and other contact surfaces than the equivalent
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amount of hydrochloric acid, and has a significantly less
tendency to release hydrogen chloride gas.
(„279 Patent, col. 2, ll. 25-28.)
Dill describes using acid to dissolve calcareous rock, the latter which
comprises calcium carbonate.
1

The composition then is introduced into the subterranean
formation. The acid is introduced into the subterranean
formation whereby the calcareous rock in the formation is
dissolved thereby increasing the permeability, and permitting
better flow of fluids through the formation.
(Dill, col. 3, ll. 29-34; emphasis added.) Thus, contrary to Patent Owner‟s
statements, both Dill and the „279 Patent are concerned with removing or
dissolving calcium carbonate.
Dill discloses that its urea hydrochloride also addresses the same
problem described in the „279 Patent of corrosion and harmful gas
associated with the use of hydrochloric acid:
Still another problem that is frequently encountered in an
acidizing operation is the release of corrosive fumes as the acid
is injected down the well bore. These fumes can cause
corrosion to the surface equipment used to carry out the
operation and cause irritation and discomfort to the persons
near the equipment.
The present invention provides a composition and
method for acid treating a subterranean formation which helps
overcome the above-mentioned problems.
(Dill, col. 1, ll. 56-64.)
Thus, even if the field of endeavors are considered to be different, one
of ordinary skill in the art would have considered Dill reasonably pertinent

1
“of, containing, or like calcium carbonate; chalky: calcareous earth.”
Dictionary.reference.com/browse/calcareous (accessed September 24, 2013).
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to the invention described in the „279 Patent since both were concerned with
the corrosive and harmful effects of hydrochloric acid when being used to
dissolve calcium carbonate materials.
With respect to the field of endeavor, it is true that the bulk of the
„279 Patent disclosure is about removing build-up of calcium carbonate from
surfaces and industrial liquids („279 Patent, col. 1, ll. 56-67), while Dill is
concerned with acidizing or fracturing a subterranean formation to obtain
gas or oils (Dill, col. 1, ll. 9-28). However, the following disclosure from
the „279 Patent cannot be ignored:
Urea hydrochloride, as well as the equivalent strong acid/weak
base salts disclosed herein, can also be used as an acid
replacement in any process that hydrochloric acid (also referred
to as muriatic acid) has traditionally been used in, including but
not limited to acidizing (activation) of petroleum wells, boiler
scale removal, ore reduction, food processing (e.g., corn syrup
and sodium glutamate), pickling and metal cleaning, industrial
acidizing, general cleaning . . .
(„279 Patent, col. 3, ll. 21-29; emphasis added.) Thus, the inventors
themselves recognized the application of their urea hydrochloride to
acidizing oil wells, the same field of endeavor as Dill. We find this to be
additional evidence that one of ordinary skill in the art would have
considered Dill pertinent to the same problem addressed by the inventors of
the „279 Patent, namely to avoid the corrosive and noxious effects when
using hydrochloric acid to dissolve calcium carbonate.
Dr. Tolbert testified in his written declaration “that the use of urea to
stabilize a gel in a well-drilling application [as described in Dill] is unrelated
to the use of urea in solubilizing suspensions of calcium carbonate in bulk
water or cleaning dispersions of calcium carbonate.” (Second Tolbert Decl.
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¶ 11.) According to Dr. Tolbert, it is “unsupported” that Dill is “‟directed to
dissolving calcium carbonate.” (Id.) Dr. Tolbert testifies that “the issue
addressed in Dill is not solubilization per se, but mechanical alteration of the
structure of the limestone to allow fluid flow.” (Id. at ¶ 12.)
Dr. Tolbert‟s testimony is not persuasive. As noted in the passage
reproduced above, Dill explicitly describes that “the calcareous rock in the
formation is dissolved” upon introduction of the urea hydrochloride into the
formation (Dill, col. 3, ll. 29-34). Dill also describes the “limestone
dissolving efficiency” of a urea hydrochloride composition at various
strengths and temperatures (id. at col. 4, ll. 41-42 & 55-65). Dr. Tolbert
admitted that limestone contains calcium carbonate (First Tolbert Decl. ¶ 9),
and calcareous rock by definition also contains calcium carbonate. Thus,
contrary to Dr. Tolbert‟s opinion, there was factual support for the
Examiner‟s findings that Dill describes dissolving calcium carbonate with
urea hydrochloride. We are also not persuaded by Dr. Tolbert‟s further
statement that it is not dissolution which occurs in Dill, but rather “the
creation of porous material through the transformation of the subterranean
material.” Second Tolbert Decl. ¶ 13.) It is unclear how pores and
transformation would occur without dissolving the calcium carbonate. Dr.
Tolbert simply has not offered an explanation for this alleged process, nor
specifically addressed the disclosure in Dill in which dissolution of calcium
carbonate is expressly described.
Patent Owner also argues that the conditions utilized in Dill are
extreme with respect to temperature and pressure, while, in the „279 Patent,
processes are carried out at ambient conditions (Appeal Br. 13-14). Dr.
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Tolbert testified that carbon dioxide was generated at ambient temperatures
when used for the applications disclosed in the „279 Patent (Second Tolbert
Decl. ¶ 10). However, under the extreme conditions described in Dill, Dr.
Tolbert testified that carbon dioxide would not evolve (id. at ¶ 13). We are
not persuaded by this testimony.
Dr. Tolbert did not establish that the absence of carbon dioxide would
have led the skilled artisan to the expectation that a water soluble salt, as
required by claim 1, would not have been produced under using Dill‟s
conditions. Therefore, as found by the Examiner, there would have been a
reasonable expectation of success that when the urea hydrochloride
composition of Dill was applied to solubilize calcium carbonate in aqueous
suspensions or dispersions of calcium carbonate a water soluble salt would
be produced as claimed. Furthermore, we note that claim 1 is not limited to
specific set of conditions or processes.

B. Reason to combine
Patent Owner contends that the skilled worker would not have applied
Dill to the problem solved by the „279 Patent of removing calcium carbonate
from suspensions and dispersions and keeping them from reforming or
depositing on surfaces by converting the calcium carbonate to a water
soluble salt (Appeal Br. 14). Patent Owner states:
While Dill teaches reacting calcium carbonate with a variety of
acids, Dill is unconcerned with converting calcium carbonate to
a water soluble salt. In fact, a person skilled in the art would
understand two of the four acids disclosed by Dill to lead to
water-insoluble products.
(Id.)
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Dr. Tolbert testified that “[c]onversely, Dill observes that reaction
with hydrochloric acid with limestone produces a precipitate, which is
contrary to the chemistry of calcium carbonate and to the use of urea
hydrochloride to dissolve calcium carbonate.” (Second Tolbert Decl. ¶ 12.)
Contrary to Dr. Tolbert‟s statement that the reaction of limestone with
hydrochloric acid produces a precipitate, the following explicit disclosure
appears in Dill instructing that precipitates were undesirable and how to
avoid them.
If hydrochloric acid is the acid composition used to carry out
the invention, a hydrochloric acid strength of greater than 35
percent by weight of acid has been found not to be particularly
desirable as a precipitate will form when the hydrochloric acid-
urea composition reacts with limestone.
(Dill, col. 2, ll. 6-11; emphasis added.)
Although Dill does not expressly teach the formation of a soluble salt,
Dill teaches that precipitates are undesirable and teaches that they can be
avoided by using an acid strength of less than 35 percent by weight. Thus,
Dr. Tolbert‟s statement that “Dill observes that reaction with hydrochloric
acid with limestone produces a precipitate” ignores Dill‟s teaching that such
precipitates are characterized as undesirable. (Second Tolbert Decl. ¶ 12.)
Dill‟s teaching, when applied to aqueous suspensions and dispersions, would
have led to the formation of water soluble salt as claimed.
Patent Owner cites paragraph 13 of the First Tolbert Declaration to
support its position that it would be unpredictable that a water soluble salt
would be formed upon reaction of urea hydrochloride with calcium
carbonate (Reply Br. 14-15). However Dr. Tolbert does not make this
conclusion in paragraph 13, but rather states that urea hydrochloride “has a
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strong driving force for this process” of dissolving calcium carbonate solids
by conversion to a water soluble salt, pointing to the opposite conclusion
that forming a water-soluble salt would have been predictable by one of
ordinary skill in the art.
Patent Owner argues that Dill teaches urea as “a stabilizing agent for a
gel used with multiple acids, only one of which is urea hydrochloride. Dill
provides examples of preparing several gelled acid compositions, testing the
stability of the gels, and using the gels to react materials under conditions
mimicking subterranean conditions (i.e., high temperature and pressure).”
(Appeal Br. 10.)
While it is true that other acids are disclosed in Dill, the “preferred
acid is hydrochloric acid.” (Dill, col. 2, ll. 2-3.) Examples I-IV use
hydrochloric acid to make the urea hydrochloride; Examples V and VI use
other acids to make the urea acid composition. Because of the pattern of
preferences, a person of ordinary skill in the art would have had reason to
have picked urea hydrochloride from Dill. With respect to the teachings in
Dill that urea stabilizes a gel composition comprising hydrochloric acid (id.,
Examples I, Table III, Table IV), the claims do not exclude a gel and given
the teaching in Dill that urea hydrochloric acid overcomes the problem of
corrosive fumes (id. at col. 1, ll. 56-67), one of ordinary skill in the art
would have had reason to use it in applications in which dissolution of
calcium carbonate is desired.

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SECONDARY CONSIDERATIONS
In making an obviousness determination, it is necessary to consider
evidence of secondary considerations. Graham, 383 U.S. 1 at 17-18 (1966).
We thus turn our attention to Patent Owner‟s evidence.
Patent Owner describes its invention as solving the problem of
removing calcium carbonate build-up on surfaces and lowering its content in
industrial liquids “without damaging the surroundings.” (Reply Br. 12.)
Patent Owner states “the „279 inventors were faced with the problem of
preventing adverse effects on systems and equipment caused by suspensions
and dispersions of calcium carbonate and doing so in a way that does not
itself damage the systems or equipment and does not allow the suspensions
and dispersions to reform.” (Id. at 11.)
However, Dill teaches that acid used to acidify calcareous rock
formations when obtaining oil causes “corrosion to the surface equipment
used to carry out the operation and cause irritation and discomfort to the
persons near the equipment,” and describes urea hydrochloride as a solution
to this problem (Dill, col. 1, ll. 47-67). Dill also teaches that its urea
hydrochloride dissolves calcareous rock, which comprises calcium carbonate
(id. at col. 3, ll. 28-34). While it is true that Dill does not describe dissolving
calcium carbonate in suspensions and dispersions, Dill does solve the same
problem posed by the „279 inventors of eliminating the hazards associated
with hydrochloric acid use, while still maintaining its ability to dissolve
calcium carbonate without forming precipitates (id. at col. 1, ll. 56-76; col.
2, ll. 6-12; col. 3, ll. 28-34). Thus, PO has not established a pervasive need
that was not already addressed by the prior art.
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Patent Owner provided evidence of commercial success, praise in the
industry, and copying to establish the non-obviousness of the claimed
subject matter.

Commercial success
Testimony was provided by Mick Williams, Chief Operating Office of
Peach State Labs (“PSL”) (First Williams Declaration, dated February 1,
2012: Exhibit 2B attached to Appeal Br.; “First Williams Decl.”), of the
commercial success of products sold by PSL that contained urea
hydrochloride (“UHCl”). Mr. Williams testified that, from 1998 through
2011, PSL manufactured and sold through distributors a total of over
64,000,000 (million) pounds of concentrated urea hydrochloride for the use
as described in the „279 Patent (First Williams Decl. ¶ 16).
Further evidence was provided by Roger Dexter, a Marketing and
Application Specialist for PSL, who had previously worked at Betz
Dearborn/BetzPaperChem (First Dexter Declaration, dated February 1,
2012; Exhibit 2C attached to Appeal Br.; “First Dexter Decl.”) (First Dexter
Decl. ¶ 2 and 3). Mr. Dexter stated that while working at Betz Dearborn, as
a result of his testing and recommendation, “Betz Dearborn negotiated an
exclusivity contract with Crews Chemical to sell a UHCl product for the
Pulp and Paper Industry gaining a major advantage over Competitors” (id. at
6). Mr. Dexter stated that the “efficiency and safety of urea hydrochloride
were a huge benefit to our customers.” (Id. at ¶ 7). Furthermore, Mr. Dexter
testified that “Typically it takes about a year for a customer to try a new
product, test it, make the business decision to implement it, and finally
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actually implement the products. However, we experienced very rapid
growth with the UHCl product. Within 2 years sales topped 1 million
pounds.” (Id.) The product was used to clean scales from equipment (First
Dexter Decl. ¶¶ 4, 8, 12; attached Exhibit 1 to Dexter Decl.).
It is well established that for evidence of secondary considerations to
be accorded substantial weight, there must be a nexus between the claimed
invention and what is relied upon as the secondary consideration. In re
GPAC, Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995). A nexus is established
when the secondary consideration is attributed to a feature of the claimed
invention. Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311-12.
First, we must look at the nexus between the claimed invention and
the commercial success. In paragraph 16 of Mr. Williams‟s first declaration,
where the 64 million tons of total sales number is disclosed, Mr. Williams
describes sales to distributors of urea hydrochloride, but not the use to which
the urea hydrochloride was applied. The latter is significant because the
claims are not directed to a urea hydrochloride composition but to a method
to “solubilize calcium carbonate in aqueous suspensions or dispersions of
calcium carbonate that includes adding to the suspensions or dispersions a
sufficient amount of urea hydrochloride.” („279 Patent, Claim 1.) For
example, claim 2 recites that “the calcium carbonate is in paper
manufacturing process water” and claim 5 that “the calcium carbonate is in
paper recycling process water.” Mr. Williams in his declaration refers to
removing concrete and scales from equipment with urea hydrochloric acid
(First Williams Decl. ¶¶ 12 and 15), uses that we have determined not to be
within the scope of the claim.
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In his second declaration (Second Williams Declaration, dated May
21, 2012; Exhibit 4B attached to Appeal Br.; “Second Williams Decl.”), Mr.
Williams describes sales to distributors who service companies that sell
products containing urea hydrochloride for removing calcium carbonate
suspensions and dispersions in the form of deposits on household and
industrial surfaces and from paper process streams and equipment (Second
Williams Decl. ¶ 9). Some of these uses are covered by claim 1. However,
Mr. Williams did not establish what part of the 64 million pounds of urea
hydrochloride that was sold went to the uses covered by the claims.
Similarly, the rapid growth in sales of urea hydrochloride reported by Mr.
Dexter was to clean scales from equipment, not the claimed method.
In the Reply Brief, Patent Owner argues that urea hydrochloride is
added after some calcium carbonate suspension or dispersion is formed as
the solid material is acted upon by the urea hydrochloric acid and thus falls
within the scope of the claim as we have interpreted it because a dispersion
is present after the solid reacts with urea hydrochloride (Reply Br. 24).
However, even if this is the case, insufficient evidence was provided to
establish that this is how the urea hydrochloride is utilized in these
circumstances, and how much of the sales accounted for this use.
Nonetheless, we shall not ignore such evidence since Patent Owner did
provide testimony that such uses involved turning calcium carbonate into a
water soluble salt, which is a recited step and nexus with the claimed subject
matter (First Williams Decl. ¶¶ 5, 12, and 13). Thus, we shall address the
sales data.
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Both the Williams and Dexter declarations establish that the product
was successful, but it is hard to judge the level of success, in view of the
lack information on the size of the market to know how substantial the total
sales of 64 million pounds of urea hydrochloride are from 1997 to 2012.
The numbers provided are only given in units (tons) and that alone “provides
a very weak showing of commercial success, if any.”
2
In re Huang, 100
F.3d 135, 140 (Fed. Cir. 1996).
Indeed, if the safety and efficacy of the product is responsible for the
sales, as stated by Williams and Dexter, these advantages were described by
Dill, and therefore the commercial success is related to benefits that were
known in the art. “[T]he asserted commercial success of the product must
be due to the merits of the claimed invention beyond what was readily
available in the prior art.” J.T. Eaton & Co. v. Atl. Paste & Glue Co., 106
F.3d 1563, 1571 (Fed. Cir. 1997).
Patent Owner also provided evidence that consumers pay 150 times as
much for urea-HCl than they would have had to pay for its components
(Appeal Br. 31). Patent Owner argues that customers are capable of making
their own blend of urea and hydrochloric acid, but purchase it instead (Reply
Br. 28-29). However, Patent Owner has not provided objective evidence of
why customers purchased the blend rather than preparing it themselves, nor

2
“Huang has simply not provided sufficient information upon which
the PTO could determine whether the grips were commercially successful.”
Although Huang‟s affidavit certainly indicates that many units have been
sold, it provides no indication of whether this represents a substantial
quantity in this market. This court has noted in the past that evidence related
solely to the number of units sold provides a very weak showing of
commercial success, if any.”

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has Patent Owner provided adequate evidence that customers were in fact
capable of making it themselves. The arguments are attorney argument and,
without objective evidence, are accorded little weight. For example, other
reasons could have driven customers to buy the already prepared urea
hydrochloric acid rather than prepare their own, including convenience and
existence of the „279 Patent. In fact, according to Mr. Williams, Rochester
Midland made its own urea hydrochloric acid until it was made aware of the
„279 Patent, after which it became a distributor of it (First Williams Decl.
¶ 14).
Patent Owner also argued that consumers desiring to solubilize
calcium carbonate switched from the less expensive prior art hydrochloric
acid to the much more expensive inventive product urea hydrochloride
(Appeal Br. 31). To support this argument, Patent Owner cited Exhibit 4.D
which is trial testimony by Mr. Mark Gallagher, an accountant who is said to
be qualified in the area of damage valuation (Exhibit 4.D, p. 4: 9-10; p. 6:
18-20). Mr. Gallagher testified about the profit made after purchasing the
raw materials to make urea hydrochloride (id. at p. 22: 1-12). However, Mr.
Gallagher‟s testimony is insufficient to establish that customers switched
from the cheaper hydrochloric acid to the more expensive urea
hydrochloride. As such, we find it to be attorney argument, which is
accorded little weight.

Copying
Patent Owner contends that the commercial urea hydrochloride
products used in the claimed method have been copied. Mr. Williams
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testified in his first declaration that Rochester Midland had sampled PSL‟s
product and had begun producing urea hydrochloride on its own to be used
in the method described in the „279 Patent (First Williams Decl. ¶ 14).
According to Mr. Williams, PSL informed Rochester Midland of the patent
and, after extensive review, Rochester Midland chose to become a
distributor of PSL‟s technology (id.). Mr. Williams also testified that after
purchasing PSL's UHCl products for years, EMS began producing its own
(id. at 15). Sufficient evidence was presented by Mr. Williams that the EMS
product contains urea hydrochloride (id. at 15; attached Exhibit 4).
Praise
A declaration by John MacDonald of EMS is attached as Exhibit 3 to
the First Williams Declaration. The declaration appears to be evidence
submitted in the infringement litigation between EMS and Peach State Labs.
Mr. MacDonald testified that certain products of EMS contained urea
hydrochloride and provided information sheets for these products. Three of
these product information sheets, which are said to describe products with
urea hydrochloride, list the product as the 2006 winner of the “Most
Innovative Products” with a reference to Concrete Producer Magazine. (See
First Williams Decl., Exhibit 3, Exhibit C-1 attachment to Exhibit 3.) Patent
Owner says this is “praise by the industry” and evidence of commercial
success (Appeal Br. 33.)
We give this little weight. There is scant information on the award to
understand what is being “praised.” Nor did Patent Owner provide
information on how it is determined to confer the “Most Innovative Product”
award on a product, e.g., who nominates the product, how competitive was
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the award, and what was considered innovative about the product. In
addition to this, the nexus between the EMS products and the claimed
invention is weak. Mr. MacDonald explained how the product is used: “(2)
apply the product to the truck exterior surface; and (3) rinse the product off
the truck exterior surface.” (Exhibit 3 attached to First Williams, paragraph
10 of the McDonald Declaration.) The urea hydrochloride is added only in
the first step. There is no subsequent step as recited in claim 1 of “adding”
urea hydrochloride to a dispersion or suspension of calcium carbonate.
Thus, the nexus, if any, between how the EMS product is used and the
claimed method is weak.

SUMMARY
Patent Owner provided evidence of commercial success of the
claimed urea hydrochloride, including sales information as described in
declarations by Mr. Williams and Mr. Dexter, and also evidence of copying.
However, when this evidence is weighed with the countervailing evidence of
obviousness in view of Dill and the admitted prior art, we conclude that the
claimed method would have been obvious to one of ordinary skill in the art
at the time of the invention. In particular, the evidence of commercial
success has a weak nexus to the claimed invention since it was not firmly
established what part of the sales data is attributable to the claimed method
of “adding to the suspensions or dispersions [of calcium carbonate] a
sufficient amount of urea hydrochloride to convert the calcium carbonate to
a water soluble salt.” („279 Patent, claim 1.) In addition to this, while Patent
Owner asserted that the „279 Patent inventors had solved the problem
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associated with using noxious and corrosive hydrogen chloride as an acid to
dissolve calcium carbonate, Dill in fact had already discovered that a
composition comprising urea hydrochloride, when used to dissolve rock
comprising calcium carbonate, avoided these same problems. Thus, the
advantages relied upon by Patent Owner in making their non-obviousness
arguments were known in the prior art. Based on such advantages, a person
of ordinary skill in the art would have found it obvious to have used urea
hydrochloride as taught by Dill for other applications in which calcium
carbonate dissolution was desired, including solubilizing calcium carbonate
in aqueous suspensions or dispersions of calcium carbonate as recited in
claim 1.
For the foregoing reasons, we affirm the rejection of claim 1. Claims
2-5 were not argued separately and fall with claim 1.

TIME PERIOD FOR RESPONSE
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

alw

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PATENT OWNER:

John S. Pratt, Esq.
Kilpatrick, Townsend & Stockton LLP
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309

THIRD PARTY REQUESTER:

Jacqueline E. Hartt, Ph.D.
GRAYROBBINS, PA
P.O. Box 3068
Orlando, FL 32802-3068